Foreign Trademark applications should be filed in each country where it is desired to secure a registration of a particular mark or name. Most foreign countries, like the U.S., follow the International Classification System. Foreign registrations are typically active for a ten to fourteen year term from either the date of application or date of registration, and are renewable.

Most foreign countries will afford Priority to an application if it is filed within six months of a corresponding U.S. application. When claiming priority from a U.S. filing, proof of use in the foreign country is typically not required in order to secure a registration.

A notable exception to the general rule that applications must be filed in each country separately is the European Community. In this instance, it is possible to register a trademark for the EC as a single territory. Members of the EC presently include Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden and the United Kingdom. The number of countries is expanding to match the scope of the expanding European Union. It is anticipated that eventually most of the Western and Eastern European countries will be part of the European Union.

The registry for community trademarks (CTM) is located in Alicante, Spain and is known as OHIM. CTM applications must designate all fifteen EC countries. Applications are examined as to formalities and can be refused on absolute grounds only (e.g., descriptiveness, non-distinctiveness, protected symbols and so on). An official search is conducted by OHIM and by those member states that wish to do so. Applicants are advised of findings and are then entitled to amend or withdraw applications, but applications can be refused at this stage on the grounds of prior rights.

CTM applications are published for opposition purposes with a three-month opposition period from the date of publication. During this time, prior rights can be asserted, and these prior rights are not limited only to prior national or EC applications/registrations. If an objection is raised to registration of the trademark in any EC country, the CTM application will fail, but it can then be converted to a national application in any or all of the member states without loss of priority. Convention priority can be claimed in the usual way. It is also possible to claim seniority from existing national registrations in member states.

When doing business in three or more EC states, it is cost effective to seek a CTM registration. Renewal is required every ten years and renewal fees are considerably less than those charged by each individual country. Registrations become vulnerable to cancellation after five years of non-use, but "genuine" use in any one country will maintain the validity of registration in all fifteen.

For information on European Community Trademark Registrations, click here.

Read about The Madrid Protocol.